Delhi HC Rules in SPARX vs HRX Trademark Dispute: No Injunction Granted

Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.

Citation: 2024 SCC OnLine Del 3141
Court: Delhi High Court
Date Decided: 13 May 2024
Judge: Justice Anish Dayal

Background

Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.

Plaintiff’s MARK

Defendant’s MARK

Legal Issues

1. Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
2. Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
3. Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.

Parties’ Contentions

Plaintiff (Relaxo Footwears Ltd.):

• Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
• Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
• Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.

Defendant (XS Brands Consultancy Pvt. Ltd. & Ors.):

• Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
• Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
• Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.

Decision

The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:

• The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
• Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
• The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.

Ratio Decidendi

• The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
• Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
• Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.

LEGAL ANALYSIS

Principles of passing off under common law

Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

• (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
• (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
• (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Bibliography

• Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors. [2024] SCC OnLine Del 3141
• ‘SPARX v HRX: Delhi HC refuses injunction against Hrithik Roshan’s XS Brands Consultancy for using mark ‘X’’ (SCC Online, 13 May 2024) https://www.scconline.com/blog/post/2024/05/13/delhi-high-court-refuses-injunction-against-hrithik-roshan-hrx-for-xmark-legal-news/